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Friday, February 01, 2008

Former Commissioners Gerald Mossinghoff & Stephen Kunin are preparing a position paper on various parts of the Patent Reform Act of 2007. In general, they support many of the provisions of the Act, while expressing their reservations on other provisions. Nevertheless, the authors comment that "[t]he time for fair compromises that provide these fixes is now. Too much is at stake to delay."

Sponsored by the 21st Century Coalition, the paper is quite balanced, and holds a mainstream position on all the covered topics (whether or not you personally agree with them). It's a great read for anyone looking to get a fair rundown on all the issues surrounding patent reform (I am told a copy will be sent to the editorial board at The Financial Times - wink, wink)

What follows are excerpts from the paper on selected topics:

First to file:

In 2005, the USPTO did a study of whether the first-to-invent rule advantaged or disadvantaged small entities. Using data from 1983 — when the small-entity status was first defined — through 2004, the USPTO found that the number of small entities disadvantaged by the first-to-invent rule was slightly higher (289) than those advantaged (286).

[T]he USPTO cannot practically hope to handle its workload without effective work-sharing with other patent offices, particularly the European Patent Office and the Japan Patent Office. And such work sharing will not be possible if the U.S. continues to be isolated with an outdated first-to-invent system of priority.

[O]f all of the key recommendations of the NAS that requires legislation, it is our firm opinion that establishing a first-inventor-to-file priority in the U.S. should be at the top of the list.

Post-Grant Review

Although the authors recognize that meritorious arguments can be made on both sides of the issue, we would favor the House-passed Single Window and urge the retention of Inter Partes Reexaminations. The one-year time limit creates a fixed period in which to challenge granted patents on all conditions of patentability and provides incentives for competitors to do so. Conditions of patentability depending upon a search of published patents or publications could then be handled through Inter Partes Reexaminations at any time during a patent’s life. Moreover, until there are iron-clad assurances that diversions of USPTO fee income to unrelated Federal programs will not occur, there is a realistic fear that subjecting the 1.7 million U.S. patents now in force to a “Second Window” Post-Grant Review could result in disastrous resource and administrative problems for the USPTO and the U.S. patent system.

Inequitable Conduct

If full elimination of [the inequitable conduct] defense is not undertaken, Congress should consider at least a “safe harbor” that would apply to valid patents. Under such a “safe harbor,” unless at least one claim of a patent is invalidated by the court, the patent should be immune from any allegations in patent infringement lawsuits that the valid patent was wrongfully obtained through “inequitable conduct.”

Apportionment of Damages

Although intended to guard against allegedly inflated damage awards, this mandatory apportionment test would represent a dramatic departure from the market-based principles that currently govern damages calculations, opponents say. Even worse, it would result in unpredictable and artificially low damages awards for the majority of patents, no matter how inherently valuable they might be. Opponents further argue that this change would undermine existing licenses and encourage an increase in litigation. Existing and potential licensees would see little downside to “rolling the dice” in court before taking a license.

Venue

It is the authors’ view that changes to the venue provisions are not needed at this time. The popularity or consternation about filing patent cases in certain judicial districts waxes and wanes over time. The popularity of the Eastern District of Virginia’s “rocket docket” has faded in the past several years, while the popularity of the Eastern District of Texas grew. Also, certain jurisdictions will always have a disproportional number of patent cases due to the predominance of intellectual property-based industries in that judicial district, which no reasonable modifications to the patent venue provisions would alter. If the Congress determines that changes to the patent venue provisions are warranted, then the authors suggest that there be parity between the venues available to patentees and to alleged infringers.

Interlocutory Appeals

It is unproven that the benefits of interlocutory appeals of Markman orders, as the proponents argue, would actually be realized. Perhaps, the better approach to addressing the perceived problem of larger numbers of Markman reversals would beto give district court judges’ claim construction determinations greater deference at the Federal Circuit.

Willful Infringement

Given the Federal Circuit’s en banc holding in Seagate, it is the authors’ view that the problems articulated by the NAS have been effectively addressed by the judiciary, and that there is no need for legislation, which at this point would only interrupt and confuse an orderly development of common law based upon Seagate.

Read the paper in its entirety here (link), courtesy of Greg Aharonian.

Maybe the safe harbor stated above should apply only in instances where intent to deceive is inferred from the materiality of the reference. In rare cases where intent to deceive is shown by direct evidence, it seems there should be no safe harbor.

Reasonable comments overall, but the statements about the venue provisions obviously reflect that these ex-PTO commissioners have never been involved in actual patent litigation.

"The popularity or consternation about filing patent cases in certain judicial districts waxes and wanes over time. The popularity of the Eastern District of Virginia's 'rocket docket' has faded in the past several years, while the popularity of the Eastern District of Texas grew."

The flaw with this reasoning is that the Eastern District of Virginia, and later Wisconsin, eventually "waned" because the judges in those districts followed the venue laws and routinely granted 1404(a) motions to transfer where neither side had any connection to the forum. Plaintiffs stopped flocking to those districts because the judges put an end to their blatant forum shopping.

The Eastern District of Texas, on the other hand, disregards the venue laws, denies motions to transfer in all cases (except where there's a previously-filed case in another district), and actively encourages forum shopping. Thus, the the factors that caused the "waning" of other "rocket dockets" are not applicable to E.D. Texas. There is no evidence that E.D. Texas has, or ever will, "wane" without Congressional action.

Re: "there is a realistic fear that subjecting the 1.7 million U.S. patents now in force to a 'Second Window' Post-Grant Review could result in disastrous resource and administrative problems for the USPTO and the U.S. patent system." This exact same argument was made in 1999 to prevent inter partes reexaminations for any patents from applicatons filed before then, so as not to "overwhelm" the PTO, and by now has been proven completely unfounded. ALL reexaminations, public use proceedings and protests take an insignificantly small percentage of the PTO budget, and there is no valid basis for assuming that [far more expensive for the parties] oppostions would be used more extensively than reexaminations have been.

Now there's a thought: 1) A: We must have oppositions! 2) B: But they will be horrible expensive! 3)A: Don't worry, they will be very rare. 4) B: In that case, what benefit do they bring to the system? 5)A: The benefit that comes from Applicants disciplining themselves. For fear of getting bogged down in an interminable opposition prosecuted by their deadliest competitor, all Applicants will voluntarily eschew dubious claims, those that will fold under pressure from that competitor, in all their pending apps..

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About Me

Peter is a patent attorney practicing with a general-practice firm in the Chicago area. He handles a diverse intellectual property practice in the electrical, computer and software fields for leading technology companies located throughout the world, as well as for local and national start-ups and business ventures. He works closely with established and emerging-growth companies to implement successful patenting and litigation strategies. He is also a former patent examiner with the USPTO, and sincerely hopes you won't hold that against him.

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